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U.S. Intellectual Property and New Media Law Update SUPREME COURT LIMITS USE OF LANHAM ACT TO PREVENT UNACCREDITED COPYING OF A WORK IN PUBLIC DOMAIN Dastar Corp. v. Twentieth Century Fox Film Corp. et al., (Supreme Court, 2003) BARCELONA MAY NOT BELONG TO SPAIN Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, (Fourth Cir., 2003) THE FOURTH CIRCUIT REEXAMINES THE TRADEMARK RIGHTS IN SERVICES PROVIDED ABROAD International Bancorp, LLC, et al. v. Societe Dies Bains de Mer etdu Cercle des Etrangers a Monaco, (Fourth Cir. 2003) FROZEN OUT ICEE Distributors, Inc. v. J&J Snack Foods Corp., et al., (Fifth Cir. 2003) MALLED The Taubman Company v. Webfeats, (Sixth Cir. 2003) SUPREME COURT LIMITS USE OF LANHAM ACT TO PREVENT UNACCREDITED COPYING OF A WORK IN PUBLIC DOMAIN Dastar Corp. v. Twentieth Century Fox Film Corp. et al., (Supreme Court, 2003) Section 43(a) of the Lanham Act has over the years been expanded to encompass more and more aspects of unfair competition. In this case, the Supreme Court called a halt in one area. A television series had fallen to the public domain. Defendant produced an abbreviated video of the television series editing the size and substituting new opening sequence, credit page and final closing; and made other minor changes; gave it a new title and only credited its production crew. In response, the owner of the copyright in the book, on which the series was based, sued. Among other things, the complaint had a claim that the sale of its video without proper credit to the original series, constituted reverse passing off in violation of Section 43(a) of the Lanham Act. In this decision the Supreme Court found that Section 43(a) did not extend to such activity, i.e., it did not constitute false designation of origin or any false description or representation. If the defendant had merely repackaged Plaintiff's tapes and sold it as his own, there would be a violation. However, here Defendant took a creative work in the public domain, copied it, made modifications -- arguable minor and produced its own series of video tapes. Clearly, they were the manufacturer or producer of the physical goods. Here the court took the word origin to mean the "origin" of the physical goods rather than the creator of the work and thus Defendant correctly stated the origin of its goods. The Court held that to attempt to extend the phrase "origin of goods", to the originating of the idea communicated in the goods would be improper. Any other interpretation would conflict with the laws of copyright. The decision can be viewed at: http://laws.findlaw.com/us/000/02-428.html BARCELONA MAY NOT BELONG TO SPAIN Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, (Fourth Cir., 2003) Barcelona, the city, sued Barcelona.com, Inc. a company which owned the Barcelona.com website to obtain the domain name. The District Court found for the city applying Spanish law and possibly a Latin sensibility. It ordered transfer even though a counter-claim had never been filed requesting it. Here the Fourth Circuit overturned the District Court and sent the matter back for trial on the merits. The court found that since the case was brought under the Anti-cybersquatting Consumer Protection Act, the Lanham Act must apply rather than Spanish law. Essentially, the Fourth Circuit found that to come under the provisions of the Anti-Cybersquatting Consumer Protection Act that authorizes that domain name owners seek recovery or restoration of its domain name when a trademark has overstepped its authority and causing a domain name to be suspended, disabled or transferred, 1114(2)(D)(v) one must apply American law and the proported owner of a trademark and the trademark in question must have rights under U.S. law, i.e., must be a trademark under the standards of American law. Also, the Court noted that any decision under the U.D.R.P. should be given no weight by American Courts. The decision can be viewed at: http://laws.findlaw.com/4th/021396p.html THE FOURTH CIRCUIT REEXAMINES THE TRADEMARK RIGHTS IN SERVICES PROVIDED ABROAD International Bancorp, LLC, et al. v. Societe Dies Bains de Mer etdu Cercle des Etrangers a Monaco, (Fourth Cir. 2003) On May 19, 2003, the Fourth Circuit may have reshaped a substantial portion of American Trademark law. Other than registrations based on foreign registrations, the United States Trademark law requires that the holder of a trademark registration must demonstrate "use in commerce." The Lanham Act provides that "[a] marks shall be deemed to be used in commerce -- on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce." 15 U.S.C. (a) '' 1127. For many years the Trademark Trial and Appeal Board and several courts, most notably, the Second Circuit, have taken the position that both the advertising and the providing of the services must be in the United States. In International Bancorp, LLC, et al. v. Societe Dies Bains de Mer etdu Cercle des Etrangers a Monaco, the Fourth Circuit was presented with a claim by the famous "Casino de Monte Carlo" in Monaco that its service mark rights in the United States were being infringed by internet gambling sites. Although it provides no direct casino services in the United States, the casino heavily advertises in the United States and a substantial number of Americans have lost money at its gaming tables in Monaco. The District Court found that there was use in commerce through an office located in the United States which accepted reservations for the related hotel in Monaco. While the Fourth Circuit did not reject that this could be use in commerce in the proper circumstances, it found that the reservations were only for hotel accommodations and thus did not form part of the casino services. The Fourth Circuit, however, did find use "in commerce" since the statutory language includes both "intrastate" and "foreign commerce". Accordingly, it read the requirement of the Lanham Act to require advertising in the United States and the providing of services in foreign commerce. The opinion distinguishes existing federal court decisions and indicated that the Trademark Trial and Appeal Board had been wrong in its decisions in this area. There was a rather vehement dissent by Judge Motz indicating that she disagreed with both the majority's fundamental analysis and its efforts to distinguish over the existing case law in other circuits. Both the opinion and the dissent used unusually strong language in indicating their differences. The decision can be viewed at: http://laws.findlaw.com/4th/021364p.html FROZEN OUT ICEE Distributors, Inc. v. J&J Snack Foods Corp., et al., (Fifth Cir. 2003) This case deals with the earth shattering question of whether one company can distribute frozen ICEE squeeze up tubes of various flavors in the same territory that another ICEE distributor distributes ICEE's in a cup. In this case the Fifth Circuit affirmed the jury trial decision that permanently enjoined the Defendant J&J and Wal-mart Stores from selling J&J's squeeze up tubes within the territory. ICEE is a product of the 1960's, a semi-frozen beverage consisting of carbonated water and syrup mixed together that stands up when poured into a cup. The ICEE trademark was owned by the company which developed ICEE. Plaintiffs are a regional distributor licensed by the owner of the ICEE mark. Their license is exclusive in the territory. The Court of Appeals found that the dilution claim was improperly bought. The dilution act specifically indicates that the dilution claim should be brought by the owner of a trademark. While the plaintiff was the exclusive licensee, it was not an owner and accordingly, did not have standing to bring the dilution claim. The court did, however, allow the injunction to stand based on a breach of contract theory. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/5th/0230039p.pdf MALLED The Taubman Company v. Webfeats, (Sixth Cir. 2003) Upon hearing that Taubman, a Delaware Corporation, was building a shopping mall called "The Shops at Willow Bend," in Plano, Texas, Defendant registered the domain name "shopsatwillowbend.com," and created an internet website. Defendant had no connection with the mall. The website featured information about the mall with a map that links to individual websites of the tenant's stores. The site also contained a prominent disclaimer indicating that defendant's site was unofficial. The defendant describes his site as a fan site with no commercial purpose. The site did, however, contain a link to a website of a company run by defendant's girlfriend and to defendant's web design business, WebFeats. The mall owner sued. In response Defendant registered five more domain name of the "suck" variety, such as "taubmansucks.com". All of these websites link to the same site which is a running editorial on defendant's battle with plaintiff and its lawyers. The Plaintiff obtained a preliminary injunction stopping both the original domain names and the complaint names. On appeal the defendant raised the question of the first amendment and the Court of Appeals noted Athat the Lanham Act is constitutional because it only regulates commercial speech, which is entitled to reduced protections under the First Amendment. Accordingly, the Court's first analysis was whether the speech was commercial, then and only then is the analysis made as to the likelihood of confusion. As per the language of the Lanham Act, any the use of a mark not in connection with a sale or advertising of any goods or services is outside the jurisdiction of the Lanham Act and protected by the First Amendment. The Plaintiff argued the commercial nature by the links to defendant and defendant's girlfriend's website. The Court found that the advertisements on defendant's site which sold extremely minimal, could bring the site under the Lanham Act. However, Defendant had removed the link prior to the injunction and the preliminary injunction is only proper to prevent an ongoing violation. As long as defendant has no commercial links on either of the websites including links to his company of any other business the Sixth Circuit found there could be no use in connection with advertising goods or services to enjoin and the Lanham Act could not be properly invoked. The decision can be viewed at: http://laws.findlaw.com/6th/03a0043p.html |
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